Price v. Worldvision Enterprises, Inc.

• Decision Date: 24 July 1978
• Docket Number: No. 74 Civ. 748-CSH.,74 Civ. 748-CSH.
• Citation: 455 F. Supp. 252
• Parties: Lucille Hardy PRICE, Ida K. Laurel and Larry Harmon Pictures Corporation, Plaintiffs, v. WORLDVISION ENTERPRISES, INC. and Mermac Productions, Ltd., Defendants.
• Court: U.S. District Court — Southern District of New York

455 F. Supp. 252

Lucille Hardy PRICE, Ida K. Laurel and Larry Harmon Pictures Corporation, Plaintiffs, v. WORLDVISION ENTERPRISES, INC. and Mermac Productions, Ltd., Defendants.

No. 74 Civ. 748-CSH.

United States District Court, S. D. New York.

July 24, 1978.

Golenbock & Barell, New York City, for plaintiffs.

Coudert Brothers, New York City, for defendants.

MEMORANDUM OPINION AND ORDER

HAIGHT, District Judge:

Plaintiffs Lucille Hardy Price ("Mrs. Price"), Ida K. Laurel ("Mrs. Laurel") and Larry Harmon Pictures Corporation ("Harmon") commenced this action for injunctive relief and damages against defendants Worldvision Enterprises, Inc. ("Worldvision") and Mermac Productions, Ltd. ("Mermac"). Mrs. Price and Mrs. Laurel are the widows and beneficiaries, respectively, of those noted comedians of yesteryear, Oliver Hardy ("Hardy") and Stanley Laurel ("Laurel"). Harmon is engaged in the business of promoting and distributing films and of licensing toys and games. As the result of contractual relationships entered into in 1961, Harmon holds the exclusive right to utilize and merchandise the names, likenesses, characters and characterizations of Laurel and Hardy.

Worldvision is a distributor for independent television producers. Mermac is such a producer.

Plaintiffs seek to enjoin defendants from producing and distributing a television series entitled "Stan 'n Ollie", in which the actors Chuck McCann and Jim MacGeorge, respectively, portray Hardy and Laurel. Plaintiffs now move for summary judgment pursuant to Rule 56, F.R.Civ.P. The motion asserts that, in the circumstances of the case, this Court's decision in Price et al. v. Hal Roach Studios, Inc., et al., 400 F.Supp. 836 (S.D.N.Y.1975) (hereinafter "Roach") has res judicata effect entitling them to the relief sought. The Court agrees. Summary judgment will be entered for plaintiffs.

I.

The doctrine of res judicata, where applicable, has a salutary effect in the law. Parties are relieved of the burden and expense of relitigating the merits of a claim previously established. Relitigation of decided issues are equally wasteful of the resources of the trial courts.

These considerations cannot, of course, be exalted to the point where parties are deprived of their right to litigate issues which, in the totality of circumstances, cannot be regarded as having been determined. Thus res judicata is a limited concept, the limitations having been summarized by the Second Circuit in Herendeen v. Champion International Corp., 525 F.2d 130, 133 (2d Cir. 1975):

"For a judgment in a prior action to be a bar to reaching the merits in a subsequent action it is firmly established that the prior judgment must have been rendered by a court of competent jurisdiction, been a final judgment on the merits, and that the same cause of action and the same parties or their privies were involved in both suits."

Plaintiffs contend that Judge Stewart's judgment in Roach satisfies these elements, thereby entitling them to summary judgment against the present defendants. Defendants do not dispute that Roach was rendered by a court of competent jurisdiction and constitutes a final judgment on the merits. The points at issue are whether there is a sufficient identity between plaintiffs' causes of action, and a sufficient degree of privity between the defendants. To evaluate those questions, Roach and the case at bar must be examined in further detail.

II.

In Roach the plaintiffs were the same as those in this action. The defendants included Hall Roach Studios, Inc. ("Roach"); Richard Feiner & Co. ("Feiner"), and Overseas Programming Companies, Ltd. ("Overseas"). The amended complaint asserted five causes of action against the defendants. Judge Stewart granted plaintiffs summary judgment on the second and fourth causes of action. We examine these causes of action.

Second Cause of Action

Plaintiffs in Roach alleged, and Judge Stewart found, that as the result of contractual relations commencing in March, 1961, plaintiff Harmon acquired "in perpetuity the exclusive right to utilize and merchandise the names, likenesses, characters and characterizations of Laurel and Hardy." Roach at 838.

Defendant Roach claimed to be the holder of certain copyrights to Laurel and Hardy pictures. Roach also claimed to be the successor in interest to rights derived from certain employment agreements entered into between its predecessor corporation and Laurel and Hardy. That asserted interest led to the following chain of contracts, as described by Judge Stewart:

"Presumably relying on the above-acquired interest, Roach entered into an agreement on May 1, 1969 with defendant Feiner, revised by later agreement dated January 21, 1971, purporting to convey to Feiner the `world-wide exclusive merchandising rights' to the names and likenesses of Laurel and Hardy. On those same two dates, Feiner, in turn, purported to convey to Overseas those same exclusive merchandising rights outside the United States." Roach at 838.

Plaintiffs commenced their action against Roach and Feiner on January 29, 1971, adding Overseas as a defendant by subsequent amendment. Plaintiffs alleged, in summary, that:

". . . defendants are not legally entitled to the rights which they claim and that their claims are in conflict with the exclusive rights granted to plaintiff Harmon." Roach at 839.

Specifically, plaintiffs alleged in Roach that Roach, Feiner and Overseas were holding themselves out:

". . . as having and possessing the exclusive right to utilize the names, likenesses, characters, characterizations and mannerisms of Laurel and Hardy in the commercial exploitation of products and services in all media and have licensed others:

"a) to sell or license the sale of various products including toys, games, goods and other commercial products bearing the names, photographs and/or likenesses of Stan Laurel and Oliver Hardy;

"b) to utilize photographs of Stan Laurel and Oliver Hardy and/or to employ actors to portray and imitate the stylized likenesses, characterizations and mannerisms of Laurel and Hardy in order to advise and promote the sale of products; and

"c) to utilize the services of actors to portray and imitate the stylized likenesses of Laurel and Hardy on television or other media." Amended complaint in Roach, at ¶ 24, incorporated by reference in second cause of action.

These holdings out and license agreements were alleged by plaintiffs to have been without their authority, and to constitute a wrongful appropriation of their "commercial Laurel and Hardy rights." Amended complaint, ¶ 24. The second cause of action, praying for injunctive relief against Roach, Feiner and Overseas, alleged (¶ 30):

"Defendants' actions in holding themselves out as possessing the exclusive right to utilize the names, likenesses, characters, characterizations and mannerisms of Laurel and Hardy, including the placement of advertisements in trade magazines in which defendants have proclaimed exclusive ownership of such rights, have created confusion and uncertainty in the market place as to the ownership of the commercial Laurel and Hardy rights and have seriously diluted and depreciated their value, all to plaintiffs irreparable damage."

Fourth Cause of Action

In their fourth cause of action, arising out of the same factual background, the plaintiffs in Roach claimed money damages against Roach, Feiner and Overseas, and another individual whose status is not pertinent to the present case.

The Case at Bar

Following discovery procedures, plaintiffs moved on November 23, 1973 for summary judgment in Roach. Defendants cross-moved for summary judgment. Those motions were sub judice before Judge Stewart when, in early 1974, plaintiffs learned that the present defendants, Worldvision and Mermac, had produced and were about to distribute a pilot for a television series entitled the "Stan 'n Ollie" show, starring the actors McCann and MacGeorge, and commercially exploiting the names, likenesses, characters and characterizations of Laurel and Hardy. Plaintiffs contend, in the instant case, that whatever rights the present defendants assert to such commercial use derive from assignments or licenses granted to them by Roach and Feiner. In the Roach litigation plaintiffs urged that Roach and Feiner had no such rights to convey: within the context of that litigation, to Overseas. They thus viewed the Worldvision-Mermac venture as another example of wrongful conveyance by Roach and Feiner: this time to Worldvision and Mermac. Plaintiffs filed their complaint against the present defendants on February 14, 1974. The complaint sets forth the nature of the Roach litigation and the pendency of the summary judgment motions before Judge Stewart. The complaint in the case at bar alleges at ¶ 16:

"Upon information and belief any claim by defendants Worldvision and Mermac to the exercise of the commercial Laurel and Hardy rights in connection with the production, distribution and exhibition of the video tape "Stan 'n Ollie", derives by assignment or license from the `rights' claimed by Hal Roach Studios and/or Richard Feiner and Company; the existence and validity of said `rights' is the subject for determination on the pending motion for summary judgment in Price v. Roach."¹

Disposition of the Roach Case

Judge Stewart granted plaintiffs summary judgment on their second and fourth causes of action in an opinion rendered on June 26, 1975. He held that during their lifetimes Laurel and Hardy possessed a property "right of publicity" in their names and likenesses which they had never waived; which survived their death and was descendible to their widows as sole beneficiaries of their estates; and which had been legally and effectively conveyed to Harmon. Roach, on the other hand, was found by Judge Stewart never to have obtained such rights. In consequence, Feiner never obtained such rights from Roach, and had no valid basis to grant a license to...